A relatively small number of very large corporations have substantial asset portfolios, for example intellectual property portfolios. These corporations invest considerable amounts of money to acquire and maintain such large portfolios. In recent years, additional emphasis has been placed on leveraging these large intellectual property portfolios to achieve a greater return on the investment associated with their creation and maintenance.
Conventional techniques for extracting value from a large intellectual property portfolio include patent licensing, as well as the outright sale of a patent or set of patents. Patent licensing is frequently the result of business negotiations between a patent owner and an alleged infringer surrounding the infringing use of one or more patents. Licensing negotiations can be a slow and difficult process because of the adversarial nature of the negotiations, thereby gating the number of successful licensing negotiations in each year.
One method of establishing licensing agreements involves a search for infringers, and approaching infringers to negotiate a licensing agreement. Proof packs may be generated to demonstrate the infringement. Additionally, the patent holding party may approach the infringer with a set of patents including the infringed patents plus other patents relating to the infringer's field of endeavor, for example five patents, and offering a license agreement for the set of patents. Even if negotiations of this kind are successful, they can be long and drawn out. If the negotiation process takes four to five years, for example, the return on investment may be substantially diminished.
Several types of interests in intellectual property can be transferred between parties. Taking a patent as an example, the entire right, title and interest in the patent can be transferred between parties by assigning the rights in the patent. The party owning title in the patent has the right to enforce the patent and typically has standing to sue for patent infringement in the federal courts. Alternatively, the patent owner can retain title in the patent yet grant some of the rights in the patent to others by licensing those others. An exclusive license gives the licensee exclusive rights in the patent. Such exclusive rights can be limited to a geographic area or to a particular field of use. A party will take an exclusive license to a patent to be the only one in the geographic area or in the field of use, which are specified in the license, to use the patented technology. An exclusive license often has sufficient rights to enforce the patent. A non-exclusive license, on the other hand, gives the licensee only limited rights in the patent, generally, to use the patented technology along with other non-exclusive licensees. Unlike an exclusive licensee, a non-exclusive license does not have standing to enforce the patent.
A patent, or sets of related patents, may be sold to an interested party for a one time revenue gain, in which the patent owner assigns the patent to the interested party. Unlike the case where the patent owner retains title to the patent and grants licenses to others, an outright sale typically has the disadvantage of precluding further leveraging of the patent by licensing the patent. Assigning the rights in the patent typically also precludes further use by the patent owner for defensive purposes. Just because a set of patents is not in a company's business interest, does not mean that those patents will not prove valuable in a future litigation initiated against the company.